Monday, 23 February 2015

The Colombian Superintendence of industry and Commerce (SIC) granted the registration of the word mark PLANICAN after finding without cause the opposition made by PLITICAN’ s mark’s owner.

The application was made by Chalver Laboratorios de Colombia S.A. on 6th February 2014 in Class 5 i.e. for "syrups for pharmaceutical use; supplements dietary and nutritious; fortified products; nutritional supplements" and other medical products. When the dossier No 14 025216 became published in August 2014, Sanofi, opposed to the registration on the grounds of lack of distinctiveness [absolute grounds of refusal Article 135(b) Andean Community (CAN) Decision 486] and similarity of its registered trade mark PLITICAN (No 92 209061) for identical products (Class 5) [relative grounds of refusal Art 136(a) CAN Decision 486].

The opposition
Who is Sanofi? According to the Colombian newspaper La Republica, Sanofi “is the leading company in the pharmaceutical industry in Europe, the fourth worldwide and number one in the Colombian pharmaceutical market”.

Sanofi argued that the sign PLANICAN did have visual, orthographic and phonetic similarities with its mark PLITICAN. The two words ended in an identical expression i.e. ‘ican’; both word have the same number of letters; the accent on the last syllable. Moreover, the two signs identified pharmaceutical products. It is then argued that the examiner ought to have made a more “in-depth analysis, because it represented a risk to the consumer.” It then explained that “consumers could be induced to an error concerning the origin of the product, as being aimed at the health care it implied that they shared marketing and distribution channels.”

SIC
While SIC found similarities in the use of the ending words “ican”, it explained that the analysis is focused on the whole sign and that the additional elements given to the sign “generated a different impression on the consumer”. Therefore, the signs should coexist on the market as there was no likelihood of association required by Art 136(a) -which requires confusion OR association. Observe that the EU case law requires confusion rather than association. Moreover, it is established that likelihood of confusion incorporates the likelihood of association but association alone is not enough (Wagamama).

Thursday, 19 February 2015

The Brazilian Intellectual Property Office (INPI) has recently granted a collective mark to the ‘Associação dos Agricultores Familiares e Amigos da Comunidade de Vargem Alta’. The 17 local farmers who grow and cut flowers will be using and trading under the mark AFLORALTA. This information was previously published here.

Today the point is focused on a particular sentence that was published by INPI. The collective marks was granted to farmers in the community Vargem Alta in the state of Espiritu Santo with a population of 19.130 habitants. According to INPI, this collective mark is aimed to the “reconstruction and development of the region.”

Indeed, one can acknowledge that a collective mark is a ‘club asset’ shared by a group who act on a specific territory in the production of a good and/or service. In this particular case the group consist of farmers operating in the territory of Vargem Alta. But, would the collective mark develop the region? Are we just talking about economic growth?

Vast literature covers educated economic analysis of collective trade marks and geographical indication protection. In a nutshell we can establish that collective marks and/or GI do not guarantee an economic success –that is a fact. The success depend on many other things, such as reputation of the good, dynamics of the group, market structure, strategies, etc. Added to this, it could be argued that when you come from a small community a collective mark and/or GI could have a cultural impact – this goes beyond the economic effect. Whether you are a producer or a consumer, you start to be more aware of the goods and do try to preserve and maintain the value of the intangible – the name that reflects not just the good, but the community.

Would a collective mark then reconstruct and develop the region? I believe yes - of course my thought is not based on economics. A collective mark may help to provide recognition to traditional production methods and could promote conservation of natural vegetation. It is therefore argued that a collective mark may reflect a strong link between a good and culture and this at the end benefit rural development.

Do you believe that INPI's sentence refer to economic growth or cultural value?

Monday, 16 February 2015

It's not often that this English-speaker would dare post anything on this blog in Spanish, but here's his big chance to do so. MARQUES, the European trade mark organisation, is running a Coexistence Agreement Workshop next month in the lovely, vibrant city of Buenos Aires. The date is Thursday 5 March 2015 and the venue is the office of Marval, O'Farrell & Mairal, Leandro N. Alem 928 7th Floor, Buenos Aires, Argentina. for Anglophones the news is that the aim of this workshop will be to sensitize participants in commercial and legal issues that arise when a potential conflict of two or more business with similar marks can be avoided by negotiating a contract Priority Rights ("Agreement coexistence"). However, for Spanish lawyers, MARQUES announces the following:

This week the University of Buckingham has published as the publication of the week (here) an article that is available in the European Intellectual Property Review (EIPR 2015, 37(1)) by Sweet & Maxwell. The article [essentially an opinion] entitled “Genetic resources and the debate over legacy: Chilean constitutional reform”, is actually based upon a post that I wrote in this blog (here).

The abstract:
"Examines a Bill being considered by the Chilean Parliament to amend the Constitution of Chile art.19 in order to: (1) assert ownership over the country's genetic resources; (2) protect against the unauthorised use of these resources or the traditional knowledge (TK) of indigenous communities; and (3) promote the fair and equitable sharing of the benefits derived from the exploitation of these resources or TK. Compares these measures with the relevant international law framework."

It is indeed very exciting to belong to a community of IP academic, scholars, practitioners, clients and consumers, who share information in the IP Latin America region. Thanks for bringing ideas and thoughts to this Latin American blog and please… keep doing so.

Hard-copies are available directly from Sweet & Maxwell. Electronic copies via any major database (e.g. Westlaw).

Wednesday, 4 February 2015

Since this weblog has just touched upon the subject of trade mark coexistence agreements (in Peru), it is relevant to add that this very topic is the subject of a forthcoming event in Latin America: it's a workshop held under the auspices of MARQUES, the European trade mark organisation. According to the MARQUES Class 46 weblog,

"Launched a couple of years ago as nothing more than an experiment in showing how trade mark negotiation skills can be enhanced, the MARQUES Trade Mark Coexistence Agreement Workshop has grown wings and now it has flown all the way to Mexico.

This challenging yet enjoyable workshop will take place later this month, on Thursday 26 February 2015, at the Hotel Fiesta Inn Insurgentes Sur, Mercaderes 20, San José Insurgentes, Mexico City 03900, Mexico. It will, appropriately, be conducted entirely in Spanish. To remind readers of what the workshop is all about, MARQUES tells us that

The objective of this workshop will be to sensitise participants to the commercial and legal issues that arise when the potential conflict of two or more businesses with similar brands and trade marks may be avoided by negotiating a prior rights agreement (‘coexistence agreement’).

The registration fee for this meeting is a mere €25, which makes it an absolute bargain. Further information and registration details can be obtained by clicking here".

IP Tango has received news from Peru with regard to an increasingly important subject, in era of increasingly crowded trade mark registers: coexistence agreements. The Administrative Court of Appeals for Intellectual Property Matters of the Peruvian Trade Mark Office (INDECOPI) has released a new binding administrative precedent -- Resolution 4665-2014/TPI-INDECOPI -- regarding the criteria for evaluating whether a coexistence agreement may be accepted.

In essence, a coexistence agreement may be valid and binding upon its parties only if it complies with criteria of acceptability under competition law and does not deceive consumers. Further, a set of minimum conditions have been stipulated for the purpose of ensuring that consumers are not confused.

A caveat for trade mark owners is that, while failure to satisfy the legal criteria is fatal to the acceptance and therefore the legal effect of a coexistence agreement, the fact that those criteria does not necessarily and automatically mean that the agreement will be legally acceptable.